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Trademark Opposition proceedings in India 

Trademark Opposition proceeding in India, although very extensive, is very thrilling and fun. Before diving into the process of competition intending, a brief run through of the overall procedure of trademark submitting until registration could be helpful. Once a trademark utility is filed, the Registry examines the application to decide the uniqueness of the mark. If the Examiner is satisfied that the mark is extraordinary and that there are no comparable marks already existing inside the Trade Register, then the mark is published inside the Trademarks Journal. Post such publication, the mark is open for opposition through 1/3 parties for a period of 4 months. Accordingly, if any third celebration opposes the mark, the opposition complaints shall initiate and upon completion, the mark will then be registered relying on the outcome of the same. (Find the method from submitting to registration here).

Who can oppose a trademark?

Section 21 of the Trademarks Act, 1999 says that “any person” who desires to oppose a trademark application can achieve this by submitting a Notice of Opposition at the prescribed form along with the prescribed fee. The opponent does no longer necessarily must be a registered proprietor of a trademark. He can be a purchaser, client or a member of the general public in all likelihood to apply the goods. The motive behind that is that the opponent is not most effective representing himself but the public at huge because having two similar marks within the market can handiest result in confusion amongst the public at huge.

Stage 1: File a Notice of Opposition/File a Counter-Statement

Within the four months post publication of the mark the Trademarks Journal (advertisement), any character can oppose a trademark by means of filing a Notice of Opposition through manner of Form TM-O at the side of the prescribed rate. Essentially, a Notice of Opposition carries the application towards which trademark opposition is sought and the grounds for opposing the mark. It is first despatched to the Registry for review and if all the requirements are complied with, then the Registry serves the Notice on the opposite party (applicant of the trademark).

Upon receipt of such Notice of Trademark Opposition, a counter-assertion have to be filed inside the month statutory deadline on Form TM-O at the side of the prescribe charge through the applicant. There isn’t any extension to file a counter-statement which means that that if the alternative party fails to record a counter-declaration inside 2 months of receiving the Notice, he will be deemed to have abandoned his application. The counter-statement generally carries a paragraph sensible counter of every of the grounds made inside the Notice of trademark Opposition. Again, it’s miles first sent to the Registry for assessment and if all the necessities are complied with, then the Registry serves the counter-declaration on the opponent.

Stage 2: Filing of Evidence

Rule 45 – Evidence in aid of the Trademark Opposition:

Within two months of receiving the counter-statement, the opponent may offer evidence in help of his opposition in the form of an Affidavit to reinforce the case. The opponent can select to waive filing such an Affidavit beneath Rule 45 if he wants to rely solely on the information said in the Notice of Trademark Opposition. In any case, it ought to be informed to the Officials of the Trademarks Registry and the opposite party within the prescribed time, otherwise the competition will be dealt with as abandoned.

Rule 46 – Evidence in aid of the Application:

Within months of receiving the Rule 45 evidence/intimation of waiver by using the opponent, the applicant must adduce proof in support of his application. The applicant additionally has an option of waiving to submit any proof and can rely upon the counter-statement alone.

Rule 47 – Evidence in Reply:

Within one month of receiving the Rule 46 evidence/intimation of waiver by the applicant, the opponent again has the option to adduce more evidence in support of his competition, if any. This provision is given which will gain some form of conclusiveness inside the competition proceeding, to rebut the proof produced through applicant and to rest their case.

Stage 3: Hearing

Upon completion of proof submission stage, a listening to is appointed by the Registry and the events are notified of the same. A request for adjournment may be made beneath Form TM-M, at the least 3 days prior to the hearing date. Further, the maximum variety of adjournments that can be requested by a party are confined to 2 and the duration of every of such adjournment are confined to now not greater than 30 days.

The Registrar shall upon hearing both the events and reviewing the proof submitted decide on whether the trademark will be registered or now not thereby bringing the competition proceeding to a conclusion. However, the opposite party aggrieved by way of the Registrar’s decision may undertaking the identical by means of filing an appeal before the Intellectual Property Appellate Board.

Roadblocks to the opposition proceeding?

Registering a trademark in India takes a large amount of time, and God forbid, if your mark receives opposed via a third  party individual, then inevitably, it takes plenty extra time. While there may be a structured procedure for the trademark opposition proceeding, delays are nonetheless caused due to numerous motives such as not following the set manner. There is currently a lot delay due to the fact the Indian Registry is within the technique of digitizing everything below the sun! So, all we want to be is patient due to the fact the result of the wait can be fruitful or at least, let’s be hopeful! Hope, this article will clarify your doubts on Trademark Opposition proceedings in India.

We “Solubilis Corporate Services” are the registered Trademark Attorney, Patent attorney, and Company Secretary in Chennai, Coimbatore, Bangalore, Hyderabad, Cochin, Salem, Madurai, Trichy, Tirupur and Karur. We have the team of well-experienced members to do your Trademark registration in Coimbatore, Chennai, Bangalore, Hyderabad, Cochin, Salem, Madurai, Trichy, Tirupur and Karur. For more details, kindly go through our website and contact us. Our experts are just one call away from you. Thanks for reading!!!